Microsoft Corporation v. zhijun shen / shen zhijun
Claim Number: FA1301001481864
Complainant is Microsoft Corporation (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is zhijun shen / shen zhijun (“Respondent”), China.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <windowmessenger.com>, registered with Domain-A-Go-Go, LLC and <micrtosoft.com>, registered with HawthorneDomains.com LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2013; the National Arbitration Forum received payment on January 24, 2013.
On January 28, 2013, Domain-A-Go-Go, LLC confirmed by e-mail to the National Arbitration Forum that the <windowmessenger.com> domain name is registered with Domain-A-Go-Go, LLC and that Respondent is the current registrant of the name. Domain-A-Go-Go, LLC has verified that Respondent is bound by the Domain-A-Go-Go, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On or about February 13, 2013, the Forum was notified by Domain-A-Go-Go that the <windowmessenger.com> domain name had inadvertently been allowed to be transferred to a new registrar on February 6, 2013. The Forum contacted the new registrar, HANGZHOU AIMING NETWORK CO.,LT, notifying them that the domain name had been transferred in violation of the UDRP, paragraph 8. HANGZHOU AIMING NETWORK CO.,LT confirmed the registration and locked the domain name, but refused to transfer the domain name back to the prior registrar, even after multiple requests from the former registrar and the Forum. The Forum notified ICANN and requested guidance several times, but did not hear back and the case proceeded.
On January 29, 2013, HawthorneDomains.com LLC confirmed by e-mail to the National Arbitration Forum that the <micrtosoft.com> domain name is registered with HawthorneDomains.com LLC and that Respondent is the current registrant of the name. HawthorneDomains.com LLC has verified that Respondent is bound by the HawthorneDomains.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@micrtosoft.com and postmaster@windowmessenger.com. Also on January 31, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. Respondent is not commonly known by Complainant’s MICROSOFT or WINDOWS trademarks.
ii. Complainant believes that the disputed sites distribute malicious software and may be attempting to collect information from unsuspecting Internet users.
iii. Respondent has registered the disputed domain names to typosquat.
i. Respondent has registered the disputed domains primarily for the purpose of disrupting Complainant’s business and with the intent of commercially benefitting from such use.
ii. Complainant believes that the disputed domains resolve to websites that distribute malware to Internet users, and may be attempting to collect information from unsuspecting Internet users.
iii. Respondent registered the disputed domains despite actual knowledge of Complainant’s MICROSOFT and WINDOWS trademark rights.
iv. Respondent is a recidivist typosquatter.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a very prominent worldwide leader in software services and solutions and related goods and services.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MICROSOFT (e.g., Reg. No. 2,163,597, registered June 9, 1998) and WINDOWS marks (e.g., Reg. No. 1,872,264, registered January 10, 1995) and with China’s State Administration for Industry and Commerce (“SAIC”) for the MICROSOFT (e.g., Reg. No. 621,767, registered December 10, 1992) and WINDOWS marks (e.g., Reg. No. 673,639, registered January 14, 1994).
3. Respondent registered the <micrtosoft.com> domain name on March 4, 2012 and the <windowmessenger.com> domain name on November 6, 2011.
4. Complainant’s belief that the websites to which the disputed domain names resolve distribute malicious software and that they may be attempting to collect information from unsuspecting Internet users is well founded. Those websites also lead to advertisements for goods and services that in some cases are unrelated to those of Complainant and in other cases are in competition with Complainant’s goods and services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims that it is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant argues that it is the owner of numerous proprietary marks for its goods and services, including the world famous trademarks MICROSOFT and WINDOWS. Complainant contends that its trademark MICROSOFT is used in connection with software and other goods and services. Complainant asserts that its trademark WINDOWS has become the world’s most popular computer operating platform for desktop and laptop computers. Complainant argues that it is the owner of trademark registrations with the USPTO for the MICROSOFT mark (e.g., Reg. No. 2,163,597, registered June 9, 1998) and for the WINDOWS mark (e.g., Reg. No. 1,872,264, registered January 10, 1995). See Complainant’s Exhibit 8. Complainant also contends that it owns trademark registrations with China’s SAIC for the MICROSOFT mark (e.g., Reg. No. 621,767, registered December 10, 1992) and for the WINDOWS mark (e.g., Reg. No. 673,639, registered January 14, 1994). See Complainant’s Exhibit 8. The Panel notes that Respondent appears to reside in China. See Complainant’s Exhibit 4. The Panel holds that Complainant’s registration of the MICROSOFT and WINDOWS marks with the USPTO and SAIC shows that Complainant has rights in the marks under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MICROSOFT and WINDOWS marks. Complainant asserts that Respondent’s <micrtosoft.com> domain name is nearly identical and confusingly similar to Complainant’s MICROSOFT trademark as it consists of Complainant’s mark with the addition of the character “t” in the middle of the mark. Previous panels have concluded that the addition of a letter to the mark does not negate confusing similarity under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Complainant also asserts that Respondent adds the gTLD “.com” to the <micrtosoft.com> domain name. In Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002), the panel held that attaching a gTLD was unable to create a distinction capable of overcoming a finding of confusing similarity. Thus, the Panel holds that Respondent’s <micrtosoft.com> domain name is confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <windowmessenger.com> domain name is nearly identical and confusing similarly to Complainant’s WINDOWS trademark, as it entirely incorporates the singular form of the term WINDOWS with the addition of only the generic or descriptive term “messenger.” The Panel finds that the addition of a generic or descriptive term does not distinguish Respondent’s domain name from Complainant’s <windowmessenger.com> mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel notes that Respondent removes the “s” from Complainant’s WINDOWS mark in the <windowmessenger.com> domain name. The Panel determines that the removal of a letter does not differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). The Panel again finds that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, supra. Therefore, the Panel holds that the <windowmessenger.com> domain name is nearly identical and confusing similarly to Complainant’s WINDOWS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MICROSOFT and WINDOWS trademarks and to use them in its domain names, making minor spelling changes in each case and, in the case of the <windowmessenger.com> domain name, adding the generic word “messenger” to the trademark, after deleting the letter “s” , thereby strengthening the confusing similarity between the domain names and the trademark;
(b) Complainant argues that Respondent is not commonly known by Complainant’s MICROSOFT or WINDOWS trademarks. Complainant claims that the WHOIS information identifies Respondent as “zhijun shen / shen zhijun.” See Complainant’s Exhibit 4. Complainant contends that Respondent is not affiliated with Complainant in any way. Complainant argues that Respondent is not licensed by Complainant to use Complainant’s MICROSOFT or WINDOWS marks. Complainant states that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. The Panel notes that nothing in the WHOIS information or other evidence on the record implies that Respondent is commonly known by either of the disputed domain names. The Panel therefore determines that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(c) Complainant contends that it believes that the disputed sites distribute malicious software and may be attempting to collect information from unsuspecting Internet users. The Panel notes that Respondent’s <windowmessenger.com> domain name resolves to a page showing an error reading “Web Page Blocked due to Security Policy Violation.” See Complainant’s Exhibit 12. The Panel notes that Respondent’s <micrtosoft.com> domain name automatically redirects to third-party websites, such as “Home Depot,” “Turbo Tax,” a hyperlink web directory, or other links. See Complainant’s Exhibit 13. The Panel concludes that Respondent’s use of the disputed domain names to distribute malware or to link to third-party websites is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”);
(d) Complainant claims that Respondent has registered the disputed domain names to typosquat. Complainant argues that Respondent has registered misspelled versions of Complainant’s famous marks attempting to attract Internet users who type in Complainant’s domain names, but mistakenly input <windowmessenger.com> or <micrtosoft.com>. As the Panel finds that Respondent has engaged in typosquatting to attract Internet users to its website, the Panel holds that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”);
(e) Respondent has engaged in these activities without the consent or approval of Complainant.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent has registered the disputed domains names primarily for the purpose of disrupting Complainant’s business and with the intent of commercially benefitting from such use. Complainant argues that the disputed domain names are nearly identical misspellings of Complainant’s famous marks and the websites to which the disputed domain names resolve direct users to websites other than Complainant’s. Complainant claims Respondent presumably commercially gains in the form of advertising revenue. Further, Complainant contends that the disputed domain names will direct users to competitive goods. The Panel notes that Complainant’s third attempt to navigate to <micrtosoft.com> resulted in a web directory featuring links such as “INTERNET EXPLORER UPDATE,” “FIX EXPLORER UPDATE,” “MICROSOFT OFFICE,” and others. In Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008), the panel concluded that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii). Consequently, the Panel determines that Respondent registered the <micrtosoft.com> and <windowmessenger.com> domain names to disrupt Complainant’s business, showing bad faith use and registration under Policy ¶ 4(b)(iii).
Secondly, Complainant asserts that it believes that the disputed domain names resolve to websites that distribute malware to Internet users, and may be attempting to collect information from unsuspecting Internet users. The Panel notes that Respondent’s <windowmessenger.com> domain name resolves to a page showing an error reading “Web Page Blocked due to Security Policy Violation.” See Complainant’s Exhibit 12. The Panel holds that Respondent’s use of the <windowmessenger.com> domain name to distribute malware to Internet users evidences bad faith use and registration of the domain name under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Thirdly, Complainant argues that Respondent is a recidivist typosquatter. The Panel notes that the <micrtosoft.com> domain name differs substantively from the MICROSOFT mark by the addition of a single letter, and the <windowmessenger.com> domain name differs substantively from the WINDOWS mark by the deletion of a letter and the addition of a generic or descriptive term. Prior panels have concluded that a respondent’s engagement in typosquatting evidenced bad faith pursuant to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). However, concerning the <windowmessenger.com> domain name, Respondent’s transgressions are greater than mere typosquatting in view of the fact that Respondent has not merely made a spelling alteration, but has added an entire word to the trademark, which itself constitutes bad faith registration and use. However, it is clear that the <micrtosoft.com> domain name was typosquatted and thus that it was registered and is used in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant contends that Respondent registered the disputed domains despite actual knowledge of Complainant’s MICROSOFT and WINDOWS trademark rights. Complainant claims that its MICROSOFT and WINDOWS marks were registered and clearly famous throughout the world at the time that Respondent registered the <micrtosoft.com> and <windowmessenger.com> domain names. Accordingly, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the MICROSOFT and WINDOWS trademarks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <micrtosoft.com> and <windowmessenger.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 4, 2013
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